Babek International Limited v Iceland Foods Limited

For registration under the applicable trade mark regime, the requirements that a sign exist, be graphically represented with sufficient clarity and precision, and be capable of distinguishing goods or services are independent and cumulative. A written description and pictorial representation must be read together; neither takes precedence. A concise description may identify the principal features of a single depicted sign without cataloguing every visual detail, provided it does not expand or contradict the pictorial representation. A figurative logo may therefore satisfy the first two requirements without Pantone references where the register presents one clear sign. Distinctiveness cannot determine whether the subject matter is a sign or is clearly represented. State-of-the-register evidence is generally irrelevant to validity.

Babek owned a comparable UK trade mark consisting of a pictorial logo accompanied by a written description referring to a gold oval, gold and black colours, and embossed BABEK writing. Iceland counterclaimed for invalidity and applied for summary judgment, with the parties agreeing that validity should be determined. His Honour Judge Hacon dismissed the application in so far as it challenged registrability: [2025] EWHC 547 (IPEC). Iceland appealed, arguing that the mark was not a sign and was not represented with sufficient clarity and precision. The central issue was how the pictorial representation, written description and categorisation as a figurative mark should be interpreted.

The appeal was dismissed. Arnold LJ gave the leading judgment. Zacaroli LJ agreed with his conclusions and reasons, and Newey LJ agreed with both judgments.

1. Under the applicable provisions of the Trade Marks Act 1994, Directive 2008/95/EC and Council Regulation 40/94/EC, the requirements that the subject matter be a sign, be capable of graphical representation, and be capable of distinguishing goods or services are independent and cumulative. Whether the subject matter is a sign and whether it is clearly represented are logically anterior to distinctiveness. The judge had therefore applied the wrong “capacity to distinguish” test.
2. A written description embracing a multiplicity of possible signs does not satisfy the first condition and may also fail the clarity and precision requirement. The registration must not present multiple candidates for comparison or an indeterminate range of appearances.
3. The categorisation as a figurative mark, the pictorial representation and the written description must all be considered. None has precedence. The categorisation is a useful starting point, but is not determinative. A reasonable reader may understand a concise description as summarising the pictorial representation. Minor visual details need not all be stated in words, provided there is no inconsistency or uncertainty about the subject matter.
4. Applying that approach, the mark was a single sign depicted in the pictorial representation. “Embossed” referred, in context, to the shadowing and visual effect of the lettering and other features. “Gold” and “black” described the principal colours shown. The pictorial representation was not merely an example and did not include variations in hue. The mark was accordingly a sign and was represented clearly and precisely. Pantone numbers were unnecessary.
5. The judge had also erred in considering Coca-Cola and Tesco registrations. State-of-the-register evidence is generally irrelevant and inadmissible when validity is being assessed. That error did not alter the result because the Court reconsidered the issues under the correct legal approach and reached the same conclusion.
6. The Court did not need to determine the disputed standard of appellate review or consider the third condition in detail.

1. Court of Appeal (Civil Division) — In [2025] EWCA Civ 1341, the appeal against the dismissal of Iceland’s validity challenge was dismissed.
2. Intellectual Property Enterprise Court — His Honour Judge Hacon determined the trade mark’s validity and dismissed Iceland’s application for summary judgment in [2025] EWHC 547 (IPEC).